Ex Parte Krafft et al

Patent Trial and Appeal BoardOct 29, 2012

11915067 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte PHILIPPE KRAFFT, PATRICK GILBEAU, DOMINIQUE BALTHASART, and VALENTINE SMETS __________ Appeal 2012-001529 Application 11/915,067 Technology Center 1600 __________ Before DONALD E. ADAMS, LORA M. GREEN, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a chlorohydrin preparation process. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1-12 and 14-21 are pending and on appeal (App. Br. 2). We will focus on claim 1, the only independent claim on appeal, which reads as follows: Appeal 2012-001529 Application 11/915,067 2 1. A process for preparing a chlorohydrin by reacting glycerol, an ester of glycerol or a mixture thereof with a chlorinating agent in a reactor which is supplied with one or more liquid streams comprising less than 10% by weight of the glycerol, the ester of glycerol or the mixture thereof relative to the weight of the entirety of all liquid streams introduced into the reactor. Claims 1-12 and 14-21 stand rejected under 35 U.S.C. § 103(a) as obvious over Kubicek1 in view of Kirk-Othmer2 and Industrial Chemical3 (Ans. 5). Appellants argue that “there is nothing in [Kubicek] that would lead one of ordinary skill in the art to consider the claimed value of less than 10% to be an optimized amount or range within the broad teachings of Kubicek (which clearly point in the other direction)” and that the other applied references fail to overcome this deficiency (App. Br. 4-5). ANALYSIS Kubicek discloses a method of “hydrochlorination of glycerine and/or monochloropropanediols to the dichloropropanol products 1,3-dichloro- 2-propanol and 2,3-dichloro-1-propanol, . . . the liquid feed containing at least 50% by weight of glycerine and/or monochloropropanediols” (Kubicek, Abstract; see also col. 2, ll. 51-60). We agree with Appellants that the Examiner has not set forth a prima facie case that it would have been obvious to supply one or more liquid streams comprising less than 10% by weight of glycerine, i.e., glycerol, and/or an ester thereof. As noted by the Examiner (Ans. 9), Kubicek discloses that the “[s]tarting material glycerine can be of various quality with the various 1 Kubicek et al., US 7,473,809 B2, Jan. 6, 2009. 2 2 Kirk-Othmer Encyclopedia of Chemical Technology 156 (4th ed. 1992). 3 5 Industrial Chemical Encyclopedia 457 (1979). Appeal 2012-001529 Application 11/915,067 3 glycerine content and various kinds of the impurities” (Kubicek, col. 4, ll. 15-17). In particular, Kubicek discloses: “Distilled glycerine with the various contents of glycerine can be used; content of 90.0-99.9% being preferred. Also crude glycerine with various contents of glycerine can be used; content of 80.0-90.0% being preferred.” (Id. at col. 4, ll. 17-20.) However, we do not agree with the Examiner that this teaching “impl[ies] that the concentration of glycerin can be in the range of from a greater than 0 % to 100 %” (Ans. 9). In addition, given the difference between the range recited in Kubicek (at least 50%) and the claimed range (less than 10%), we do not agree with the Examiner that reliance on In re Aller, 220 F.2d 454, 456 (CCPA 1955), is sufficient to provide a prima facie case of obviousness (see Ans. 13). CONCLUSION The Examiner has not set forth a prima facie case that the method of claim 1 would have been obvious. We therefore reverse the obviousness rejection of claim 1 and of claims 2-12 and 14-21, which depend from claim 1. REVERSED lp